Decision for dispute CAC-UDRP-108911

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has provided evidence of its ownership of registered trademark rights in the trademark LACTALIS in numerous jurisdictions:

• The European trademark No. 001529833, registered on November 7, 2002 in classes 1, 5, 10, 13, 16, 31, 33, 34, 40 and 42;
• The International figurative trademark No. 900154, registered on July 27, 2006 in classes 29, 30 and 35;
• The International figurative trademark No. 1135514, registered on September 20, 2012 in classes 05, 29, 30, 32 and 35;
• The European figurative trademark No. 017959526, registered on May 22, 2019 in classes 1, 5, 7, 9, 16, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34, 35, 36, 38, 39, 40, 41, 42, 43, 44 and 45;
• The US trademark No. 6824877, registered on August 23, 2022 in classes 1, 29, 30 and 32;
• The US figurative trademark No. 6933510, registered on December 27, 2022 in classes 1, 29, 30 and 32.

The trademarks are still valid at present and their registration dates predate the registration date of the disputed domain name, <lactalis-us.com>, registered on May 6, 2026.

The Complainant also owns a number of domain names, including <lactalis.com> registered on January 9, 1999 and <lactalisus.com> registered on May 6, 2022.

 A. Complainant's Factual Allegations

Founded in 1933, the Complainant is a French multi-national company, engaged in the food industry, particularly the dairy sector. It has been operating under the name “Lactalis” since 1999. It is the largest dairy products group in the world, with over 85,500 employees, 266 production sites, and a presence in 49 countries.

B. Respondent's Factual Allegations

The Respondent has defaulted in this UDRP administrative proceeding and has consequently made no factual allegations. The Respondent is Lactalis USA, based at the address of Free town, Alabama, Alabama, Postal Code 35004, United States. The disputed domain name was registered on May 6, 2026 by the Respondent and is inactive.

A. COMPLAINANT

The Complainant's contentions can be summarized as follows:

I. The disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights

The disputed domain name reproduces the Complainant's trademark in its entirety. The addition of the geographical term “US” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark LACTALIS. It does not change the overall impression of the designation as being connected to the Complainant’s trademark LACTALIS. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and domain names associated. On the contrary, it worsens the likelihood of confusion, as this term refers to the Complainant’s activities in the United States via its subsidiary LACTALIS USA.

II. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the grounds: i) the Respondent is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and it is not related in any way to its business. The Complainant does not carry out any activity for, nor has any business with the Respondent; ii) neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark LACTALIS or apply for registration of the disputed domain name by the Complainant; iii) the disputed domain name resolves to an inactive page. The Respondent did not use the disputed domain name or has no demonstrable plan to use the disputed domain name; iv) the Respondent failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

III. The Respondent registered and is using the disputed domain name in bad faith

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith on the grounds: i) the disputed domain name is confusingly similar to the Complainant’s trademark LACTALIS, which was already well known and protected in several countries at the time of the registration of the disputed domain name. Given the distinctiveness of the Complainant’s trademark and reputation, the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark LACTALIS; ii) the addition of the geographical term "US" to the Complainant’s trademark cannot be coincidental and worsens the likelihood of confusion, as these terms refer to the Complainant's activities in the United States, via its subsidiary LACTALIS USA; iii) the disputed domain name points to an inactive page. As prior WIPO UDRP Panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

B. RESPONDENT

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the domain name; the complainant shall prove the following three elements:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.                

Based on the above regulations under the Policy, what the Panel needs to do is to find out whether each and all of the above-mentioned elements are established. If all three elements are established, the Panel will make a decision in favor of the Complainant. If the three elements are not established, the claims by the Complainant shall be rejected.

The Respondent did not submit a Response with any argument against what the Complainant claimed and to show his intention to retain the disputed domain name as required by the Policy and the Rules. If the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. In view of the situation, the Panel cannot help but make the decision based primarily upon the contentions and the accompanying exhibits by the Complainant, except where there is an exhibit proving to the contrary.

I. Identity or Confusing Similarity

Pursuant to Paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical with or confusingly similar to a trademark or service mark in which the complainant has rights.

Complainant has rights in a trademark or service mark 

The Complainant has provided evidence of ownership of valid trademark registrations for the trademark LACTALIS, registered in 2002, 2006, 2012, 2019 and 2022 in numerous jurisdictions and classes as mentioned above in the IDENTIFICATION OF RIGHTS. The trademarks are still valid and their registration dates significantly predate the registration date of the disputed domain name, i.e. May 6, 2026. The Complainant therefore has rights in the trademark LACTALIS.

The disputed domain name should be identical or confusingly similar to the trademark or service mark

The disputed domain name contains the Complainant's trademark LACTALIS in its entirety and the geographical term “US". Numerous UDRP Panel decisions have established that the addition of words or letters to a trademark used in a domain name does not alter the fact that the domain name is confusingly similar to the trademark. WIPO Overview 3.1, paragraph 1.8 mentions: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Paragraph 1.7 mentions: “In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark”.

The Complainant’s trademarks contain designs, which are not the dominant portion of the trademarks. Paragraph 1.10 mentions: “To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element”.

As to the generic Top Level Domain “.com”, it is viewed as a standard registration requirement and as such can be disregarded for the purpose of assessing identity or confusing similarity.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy. Accordingly, the Complainant has proven that the first element required by paragraph 4(a) of the Policy is established.

II. Rights or Legitimate Interests of the Respondent

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the grounds: i) the Respondent is not affiliated with nor authorized by the Complainant; ii) the Complainant does not carry out any activity for, nor has any business with the Respondent; iii) neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark, or apply for registration of the disputed domain name; iv) the disputed domain name resolves to an inactive page. The Respondent did not use the disputed domain name or has no demonstrable plan to use the disputed domain name.

Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See WIPO Overview 3.1, paragraph 2.1.

Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, the Respondent has failed to meet that burden. The Respondent did not submit any evidence to demonstrate any of the above circumstances.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven that the second element required by paragraph 4(a) of the Policy is established.

III. Bad Faith

Under Paragraph 4(a)(iii) of the Policy, the Panel finds that the disputed domain name has been registered and is being used in bad faith on the following grounds:

The Respondent had knowledge of the Complainant’s trademark

The Panel finds that the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain name, considering the following circumstances: 

WIPO Overview 3.1, paragraph 3.2.2 mentions: "Noting the near instantaneous and global reach of the Internet and search engines and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark". The Panel believes that before registration of the disputed domain name, the Respondent had made searches for the wording LACTALIS and knew it was the trademark of the Complainant.

The Respondent had the intention to cause confusion

The Complainant’s trademark LACTALIS is well-known, which was confirmed by previous UDRP Panel decisions:

WIPO Case No. D2022-2429, <us-lactalis.com>, Groupe Lactalis v. Paul Goodrich: “The Panel agrees that the trademark LACTALIS can be considered as a well-known trademark, based on the evidence provided in the case file”;

WIPO Case No. Case No. D2020-1701, <lactalis-fr.com>, Groupe Lactalis v. Contact Privacy Inc. Customer 1246860447 / Pietro Chirco, Pietro: “The Complainant’s trademark is recognized as being well known in the respective market. In this Panel’s view, the Respondent was aware of the Complainant’s rights in the LACTALIS mark at the time the disputed domain name was registered”.

Given the well-known LACTALIS trademark, it is implausible that the Respondent selected the disputed domain name without awareness of the Complainant and its trademark. As the disputed domain name incorporates the Complainant's mark in its entirety, together with the geographical term “US”, which refers to the Complainant’s activities in the United States, via its subsidiary LACTALIS USA, Internet users may reasonably assume that the disputed domain name refers to the Complainant and its business. This further supports the conclusion that the Respondent registered the disputed domain name with the Complainant and its trademark in mind and with the intention of taking unfair advantage of the Complainant's reputation.

In view of the above circumstances, the Panel holds that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. As the disputed domain name would cause confusion to internet users, it should have avoided the registration, which is considered good faith, but it registered the disputed domain name. The Respondent deliberately sought to cause such confusion. Accordingly, the Panel finds that the disputed domain name has been registered in bad faith.

The Respondent is passively holding the disputed domain name

The disputed domain name is passively held. WIPO Overview 3.1, paragraph 3.3 mentions that from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not by itself prevent a finding of bad faith under the doctrine of passive holding.

Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s taking active steps to conceal its identity or (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement).

See WIPO Case No. D2017-0246, <docmartens.xyz>, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc.; WIPO Case No. D2000-0003, <telstra.org>, Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2025-1942, <erykah-badu.com>, Erica Wright v. Tom Belfort, Wolf AI Digital LLC.

In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith. Such circumstances include the distinctiveness and reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use.

Regarding the Complainant’s contention on bad faith, the Respondent should rebut it, but it did not make any response, which strengthened the Panel’s findings on its bad faith.

In view of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy. Therefore, the Complainant has proven that the third element required by paragraph 4(a) of the Policy is established.

Decision

For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.